Ex Parte Kelley

Patent Trial and Appeal Board

Feb 11, 2015

12386897 (P.T.A.B. Feb. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/386,897 04/24/2009 Patrick W. Kelley PWK-02-1-D2 4991
7590 02/11/2015
Thomas E. Kelley
PO Box 302
Mystic, CT 06355
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
02/11/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK W. KELLEY
____________

Appeal 2013-000384
Application 12/386,897
Technology Center 3600
____________

Before CHUNG K. PAK, TERRY J. OWENS and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s Final Rejection of claims 1–6.1 We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellant’s claimed invention is directed to a plastic post and rail
fence utilizing logs made of polyolefin material and having rigid skin with a
specified surface (diameter) deformation to yield a natural log-like

1 Appellant identifies the appeal filed in parent Application No. 10/691,416
as a related appeal and appends a copy of the Board Decision rendered in the
identified related appeal (Appeal No. 2008-4931) to the Appeal Brief (App.
Br. 1). In the aforementioned Decision, the Examiner’s rejections were
affirmed. However, the affirmed rejections were based on different prior art
and a different record than relied upon by in the rejection before us in the
present appeal and the claims that were on appeal in the parent application
are not identical to the claims on appeal herein.
Appeal 2013-000384
Application 12/386,897

2
appearance for the logs used in forming the posts and rails of the fence. The
logs are required to have a diameter greater than 2.5 inches and a minimum
flexural modulus for the log that is specified. The flexural modulus property
is defined by Appellant (Spec. ¶10). According to the Specification, the logs
are fabricated from material that is preferably at least 80 percent
thermoplastic, such as polyolefin, including mixed scrap plastics (Spec. ¶¶
04, 11–12). Further details can be ascertained by a review of claim 1, the
sole independent claim on appeal, which is illustrative and reproduced
below:
1. A post and rail fence wherein posts and rails are logs
having an average diameter greater than 2.5 inches, wherein
said logs are polyolefin with a rigid skin having surface
deformation in said skin in a diameter deviation in the range
of 2 to 60% providing a natural log-textured appearance in
said skin, and wherein said logs have a flexural modulus at
40° F. of at least 110,000 psi whereby said logs resist
sagging.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:

REFERENCES

Rhome US 2,628,823 Feb. 17, 1953
Loper US 4,602,765 Jul. 29, 1986

The Examiner maintains the following grounds of rejection:
Claims 1–6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loper in view of Rhome.
Appeal 2013-000384
Application 12/386,897

3
We REVERSE the stated rejection as made by the Examiner. Our
reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
The Examiner finds that Loper discloses a fence including posts 12
and rails 14 wherein polyethylene is described as a material that can be
employed in forming an external tube 18 of the posts and rails (Ans. 3).
Loper discloses that the core portion of the post and rails is made from a
particulate material, such as sawdust, wood chips or common trash, particles
of which are held together and to the inner surface of the tube 18 with a
binder so as to harden and form the core of the rails and posts (col. 2, ll. 22–
31, 36–39).
In addition to other differences determined by the Examiner to exist
between the claimed subject matter and Loper (Ans. 5), the Examiner finds
that (Ans. 3–4):
Loper et al. fail to disclose a fence wherein the logs have
an average diameter greater than 2.5 inches, and wherein the
logs have a flexural modulus at 40° F of at least 110,000 psi.
Loper et al. do not disclose any structural or functional
significance as to the specific diameter or resultant flexural
modulus of the logs (the flexural modulus of the logs is
determined from the formula E=(load/deflection)(L3/12πr4)).

In attempting to bridge this determined gap between the applied prior
art teachings and the subject matter required by appealed independent claim
1, the Examiner concludes that (Ans. 4):
The applicant is reminded that a change in the size of a
prior art device, wherein there is no structural or functional
Appeal 2013-000384
Application 12/386,897

4
significance disclosed as to the specific size of an element, is a
design consideration within the skill of the art. In re Rose, 220
F.2d 459, 105 USPQ 237 (CCPA 1955). Accordingly, it would
have been obvious to one having ordinary skill in the art at the
time the invention was made to modify the fence disclosed by
Loper et al. wherein the logs have an average diameter greater
than 2.5 inches, and wherein the logs have a diameter and
length resulting in a flexural modulus at 40° F of at least
110,000 psi, as Loper et al. do not disclose any structural or
functional significance as to the specific diameter or resultant
flexural modulus of the logs, and as such change in size and
resultant change in flexural modulus is a design consideration
within the skill of the art that would yield expected and
predictable results; it would expected that one of ordinary skill
in the art would routinely experiment to arrive at the optimum
or workable dimensions for a given application.

Here, as urged by Appellant, the Examiner’s articulated obviousness
position asserting non-functionality and a matter of design consideration as a
rationale for reaching these claimed features is conclusive and is not
supported with substantiating evidence and reasoning so as to furnish the
requisite apparent reason that would have led one of ordinary skill in the art
to the proposed modifications (App. Br. 5). As stated in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)), “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”
Moreover, the Examiner further maintains that one of ordinary skill in
the art would have sought to optimize or arrive at the workable ranges for
the diameter and flexural modulus of the logs (post and rail elements) of the
Appeal 2013-000384
Application 12/386,897

5
fence of Loper. However, the Examiner identifies these claimed features as
lacking structural or functional significance rather than marshalling evidence
to establish their result effectiveness and articulating why one of ordinary
skill in the art would have found these features to be result effective
variables that would have been obvious to modify in a manner so as to arrive
at the claimed subject matter (Ans. 4). See In re Antonie, 559 F.2d 618
(CCPA 1977) (a particular parameter must first be recognized as a result-
effective variable, i.e., a variable which achieves a recognized result, before
the determination of the optimum or workable ranges of said variable might
be characterized as routine experimentation).
Apparently and as another alternative for at least part of the
Examiner’s non-obviousness determination, the Examiner concludes that “it
is inherent that the polyethylene (polyolefin) material of the logs provides
for a flexural modulus at 40 °F of at least 110,000 psi” for the logs of Loper
notwithstanding Loper’s lack of an explicit teaching as to this claimed log
limitation (Ans. 4). However, the Examiner merely furnishes a conclusion
rather than establishing a substantiated basis for articulating why the applied
core-filled polyethylene external tubes used as the logs (fence rails and
posts) of Loper are such (for example, they correspond with Appellant’s
disclosed materials and method for forming a log if such were the case) that
the claimed flexural modulus would necessarily be expected to a
characteristic of the logs of Loper. Compare the non-core filled extruded
logs of Appellant’s Examples 1–4 (Spec. ¶¶ 17–21) with the disclosed logs
of Loper (col. 2, ll. 11–39; Figs. 1, 2, 4). “Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Appeal 2013-000384
Application 12/386,897

6
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939)).
After all, when an examiner relies upon a theory of inherency, “the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. (1990))
(citation omitted). Here, the Examiner has not provided the requisite factual
basis and/or technical reasoning which support the Examiner’s inherency
argument.
The Examiner relies on Rhome to evidence a surface deformation in
the logs of a manufactured toy fence and applies Rhome in combination with
Loper to support the Examiner’s obviousness position as to another claimed
feature respecting a surface deformation (log diameter deviation) (Ans. 5).
As such, the Examiner does not rely on Rhome to remedy the
aforementioned deficiencies in the Examiner’s obviousness holding.
Hence, we are constrained to reverse the stated obviousness rejection
on this appeal record.

CONCLUSION
The Examiner’s decision to reject the appealed claims is REVERSED.

REVERSED

rvb